Free Speech Coalition, which has been fairly quiet since organizing a poorly attended protest at an ICANN meeting in San Francisco earlier this year, is making some noise again.

The group that represents some adult webmasters has provided a template “Trademark Protection Letter” for adult web site owners to send to .xxx registry ICM Registry. People can customize the letter with their list of trademarks to put ICM “on notice”.

According to the letter, ICM Registry has a greater responsibility than generic registries to protect specific trademarks because it’s clear that they will be used in direct competition with the owners. The letter states:

In contrast, if the holder of a trademark engages in selling specific products and services, a third party purchasing a domain identical to the trademark in a generic TLD, such as .NET or .BIZ
only improperly competes against the trademark holder if the use of the domain name is directly
in competition with the holder’s area of business.

The letter concludes with a threat:

ICM is now on notice that the registration of any domain name using the .XXX extension that is identical or confusingly similar to one of the trademarks or domains listed on Exhibit A will violate (COMPANY NAME)’s intellectual property rights and constitute an unfair business practice. ICM must take steps to prevent such activity before it can occur. Failure to take affirmative steps to prevent this conduct will establish ICM’s substantial liability.

(COMPANY NAME) welcomes the opportunity to engage in meaningful dialogue with ICM, should ICM choose to resolve these matters other than through litigation.

I consider .XXX as the Al Capone of the Internet. In order to protect your brand from being used as a porn website, you have to pay to block it. Wait until you see the names of the rich and famous and the religious organizations become a .XXX. I think they will make more money from people who want to protect themselves than the people who want to make a website. Registering a domain name costs nothing to the registry, and protecting trademarks should be automatic with no strings attached. I believe that ICANN has made a poor decision to allow this extension to exist, and we will all pay the price.

@law school dropout I guess we’ll just have to wait to see if, once lawyers who did not drop out of law school have argued their case, a judge who did not drop out of law school agrees with you. I bet they will. I can’t imagine that getting a law degree and passing the bar really means much.

pt you are correct, the ACPA does indeed say that but however its hard to rely on the word “registers” in isolation for a variety of reasons.

First of all the legislation is a product of the US so if you are a citizen of say Canada or Germany or any other country not subject to US law the ACPA has little or no effect simply due to jurisdictional issues.

Besides, as I said you can not consider the words of the act (“registering”) in isolation. There are numerous tests which need to be applied prior to determining whether or not the mere act of registering a domain name is illegal. For example the legislation requires that the mark be distinctive or famous at the time it was registered. This alone would eliminate a number of tm holders making claims in relation to the act of “registering” in and of itself but having said that I think the intent of the acpa was to protect tm holders from registrations in bad faith and the tests I spoke of earlier are by and large an attempt to determine the motivations of the registrant.

Interpreting the words in isolation would in effect squelch the notion of free speach. For example, given that pepsi has a distinctive and famous tm almost any registrant other than the tm holder would be hard pressed to find a legitimate use for the domain. How can it be used legally? Now take pepsisucks.com which is of course trademark inclusive a condition which could give rise to a decision of confusingly similar BUT b conclusion that it was confusingly similar hc ( a traemark inclushbis bith I think would lead one to leads to a blurring

alone. hThe act states that the name must be distinctive and If you were to interpret the wording of the acpa literally the 1st ammendment would be squashed. While the act states: “registers, traffics in, or uses a domain name that is (a) identical or confusingly similar to a distinctive mark” the fact is that you can indeed register trademark inclusive domain names which could give rise to a finding of confusing similarity but when used in a legitimate noncommercial way to provide criticism say, there is no case under the acpa.

While it does say registering I am not aware of any cases in which a complainant was successful under the acpa in the absense of a show of bad faith. In short while the word alone apprears damning the legislation does provide a list of indicators of bad faith as well as provisions for legitimate use defenses and whatever redress mechanism is used will but the tests to the test so to speak.

@John In the scheme of things that’s true. The .XXX extension was never intended to generate income through protection of brands, which could be individuals, religious organizations, war heroes, famous individuals worldwide, etc. Every one of those have friends and enemies. It is not right or fair to force those entities to pay money to the .XXX registry to be excluded. The money generated should come from legitimate adult and explicit content users. As to who to put in charge of determining those things, maybe ICANN can create a gang of six, like Congress did, to filter through all domains registered and lock those that are questionable to cause harm to innocent bystanders. And I am sure you can come up with a better idea on how this could be implemented.

If I am a legitimate registrant, why should I have to pay a “trademark tax” to protect the interests of people who ate perfectly capable of taking care of themselves?

“ICANN can create a gang of six”

And who pays them? Some other group of people who should pay to protect someone else’s property rights?

If you want to keep people out of your yard, do you make everyone else buy you a fence?

If it was up to ICM, there wouldn’t be a sunrise period. Now, when this was done in .info, there were more than 15,000 bogus sunrise registrations that Afilias had to hire WIPO to weed out after the fact. Even so, the sunrise registrants have to pay an annual fee to renew those registrations. When .eu was launched, their sunrise ended up granting thousands of generic words to people who got 24 hour Benelux trademark registrations for that very purpose.

So, on the lessons learned from those, ICM has hired an outside contractor to verify each sunrise application, and a one time payment blocks the name from use for the entire ten year term of the ICM registry contract. None of that is free to ICM, which has to pay the contractor, and which has to pay Afilias, their back-end services provider.

On top of that, the contact details for .xxx registrants have to be verified, which itself is a deterrent to cybersquatting in the first place.

Nobody is being coerced into using the sunrise policy. It is there because the IP interests demanded it. But it can’t be done for free, So, if there is anyone “imposing costs on others” it is those who believe their duty to police their marks is a cost for which others should pay. If you have a mark worth millions or billions, the cost od this program, if you decide to use it, is nothing. But we’ve been led to believe that the world owes something to famous brand owners.

If a brand owner doesn’t use the sunrise, then the verified contact details of registrants is one deterrent. On too of that, ICM is instituting the first ever rapid takedown policy if some idiot does register your mark for illicit purposes.

But, by all means, go get a list of trademarks you don’t own, fill out 10,000 copies of the FSC template letter, and send them to Stuart Lawley. Because that is the invitation being offered here.

What, in anyone’s mind, is going to be accomplished by sending an unverified stack of mail to ICM making various claims?